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G1/09 - an elegant definition of "pending"

The Enlarged Board has now decided how "pending" is to be interpreted.

By change the definition, they have introduced a flexible system that should result in fewer cautionary divisionals (pleasing the EPO), possibly fewer oral proceedings (again pleasing the EPO), and elimination the need to file an appeal after a refusal to be able to file a divisional (pleasing applicants and saving them money - at least the EUR. 1180 and any attorney handling fees)

Pending is surprisingly defined around Art.67(4) - its lack of importance in the past being demonstrated by the few lines of explanation in reference books such as Visser.

After refusal:
Reason 4.2.4 states that an application is considered pending [R.36(1)] until the expiry of the period for filing an appeal. So it is no longer necessary to file an appeal just to be able to file a divisional

Reason 4.2.6 clarifies that there is no difference anymore between a decision in oral proceedings and a decision in written proceedings. In both cases, the appeal period runs from the written notification of the decision.

So, it is no longer necessary to file a precautionary divisional prior to oral proceedings - if the decision is not favourable, you have plenty time afterwards to decide whetehr to appeal or to file a divisional.

Also, if you request oral proceedings merely to prevent being surprised by a written decision, that is no longer necessary. After receiving the decision, there will be at least 2 months to file a divisional and/or to appeal.

But the applicant (and his representative) cannot completely relax: it is still necessary to have at least one of the 24 month periods of R.36(1) running to be able to validly file the divisional.